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What the Right of Publicity Can Learn from Trademark Law

The right of publicity gives people the right to control the use of their name and likeness for commercial purposes. For years, courts have struggled to make sense of two dimensions of this right - what it means to use a name or likeness commercially, and what aspect of a person's likeness are protected against appropriation. In the absence of any clear theoretical foundation for the right of publicity, the meanings of these terms have steadily swelled, to the point at which virtually any use that brings financial benefit to someone by referencing an individual qualifies as a violation of the right of publicity. At the same time, the courts have developed no meaningful counterweight to this ever-expanding right. Instead, they have created a few ad hoc exceptions in cases where the sweeping logic of the right of publicity seems to lead to results they consider unfair.

Two types of publicity claims have raised particular problems for the courts. The first involves merchandising claims, in which individuals claim violation of their publicity right not by the use of a name in advertising, but by people who sell products that bear their name or likeness. Courts have generally resolved these claims by making a distinction between news or art, on the one hand, and merchandise, on the other - but as art and information become increasingly commodified, this distinction - if it ever made sense - has become ever harder to sustain. The second type of problematic claim involves cases in which a use draws attention away from the celebrity, or arguably sullies the celebrity's reputation in some way that harms the overall value of her identity. Properly limited, such a cause of action might have some theoretical appeal, but courts have applied it in ways that exceed any plausible theoretical justification, particularly when First Amendment considerations enter the fray.

Perhaps ironically, one root of the problems with these cases lies in the very elusiveness of a theoretical justification for the right of publicity. When the government can clearly identify a purpose in limiting speech, courts have some basis on which to evaluate whether the speech limitation lives up to that purpose. But because the right of publicity rests upon a slough of sometimes sloppy rationalizations, courts have little way of determining whether a particular speech limitation is necessary or even appropriate in order to serve the law's normative goals. Instead, they appear to assume that the sum of a set of inadequate justifications equals far more than its parts, and allow right of publicity claims to run roughshod over the speech interests of the public.

If the absence of a rationale has created the problem, then the answer lies in identifying whether and when a right of publicity might serve a legitimate government interest. Yet a review of the cases and literature reveals that no one seems to be able to explain exactly why individuals should have this right. A right of privacy can't justify it, for the right of publicity has been applied in a wide range of situations that don't implicate privacy at all. Some commentators have proposed a natural or moral right of control over one's name or likeness, but there seems no policy justification for giving such control, and the absence of such a right in most of the world and indeed throughout most of U.S. history should make us skeptical of claims based on some consensus moral belief. The moral claim to own uses of one's name also seems inconsistent with the absence of natural or moral rights justifications for other forms of intellectual property.

Of late, and particularly in the merchandising and dilution-like cases, courts and commentators have turned to the incentive-based rationale underlying copyright law in search of both a justification for and limitations on the right of publicity. Reasoning that the right of publicity gives individuals the incentive to develop valuable personas, courts reason that depriving them of the fruits of their labors will interfere with those economic incentives. Some courts have even gone so far as to create a fair use doctrine, importing from copyright law judicially created limits on the enforcement of the right. This approach turns the right of publicity into a new form of intellectual property, one based explicitly on analogies to and justifications for real property.

We think copyright is the wrong analogy. In the United States, copyright law is utilitarian. We grant copyrights in order to encourage the creation of new works of authorship. There is no similar justification for the right of publicity. Society doesn't need to encourage more celebrities, or more marketing of celebrity image. Nor is there any evidence that, even if such a result was desirable, a property-like right of publicity is well tailored to that goal. Copyright's fair use doctrine, moreover, involves tradeoffs between the interests of original creators and those who would like to make transformative uses of their creative works; the right of publicity has no similar tradeoff. Further, copyright's fair use doctrine is confusing to the point of incoherence; it is hardly a model anyone would wish to emulate. Finally, the analogy to copyright serves to obscure the important free speech interests at stake in right of publicity cases. For better or worse, copyright laws have gotten a free ride when it comes to the First Amendment; the copyright analogy may prompt courts to mistakenly extend that free ride to the right of publicity.

The Lanham Act is a far more appropriate analogy to the right of publicity. The Lanham Act in its traditional form protects trademark owners against commercial uses of a trademark by others that are likely to confuse consumers, either as to the source of goods or as to the affiliation, endorsement, or sponsorship of those goods by the trademark owner. The right of publicity is designed at least in part to do the same thing for celebrities. It prevents companies from using the name or likeness of an individual in advertising or promotion to falsely suggest that the individual has endorsed the advertised product. More recently, the Lanham Act has been expanded to prevent dilution of famous trademarks by commercial uses that draw attention away from the trademark owner, or throw it into disrepute, even if they do not confuse. Dilution, too, has analogies in the right of publicity. Uses of a celebrity's name or likeness might in rare circumstances divert attention away from the celebrity or, more likely, might tarnish the reputation of the celebrity by using her name or likeness in a disreputable connection, even in the absence of confusion or assumptions of endorsement. Finally, a few courts have expanded trademark law to include a general right to control the merchandising of goods bearing a trademark, even in the absence of confusion or dilution. This merchandising right too has analogues in the right of publicity. Indeed, the mutation of the right of publicity into a virtually unlimited property right over any use of a name or likeness can best be understood as the wholesale adoption of the putative trademark merchandising right.

Reconceiving the right of publicity as an outgrowth of trademark law has several significant benefits. First, it offers a helpful way to think about the different sorts of claims made under the rubric of publicity. We have considerable experience with each of these types of claims in trademark law, and applying that knowledge can help us understand why we might (or might not) want to prohibit particular uses, and when the law should forbid them. Most importantly, looking at the right of publicity through the lens of trademark law offers logical ways to limit the right of publicity. Trademarks are not property rights in the traditional sense, though a few commentators have argued that trademark owners should have property-like rights over their marks. The idea of a merchandising right, while recognized in a few cases and supported by trademark owners, is not commonly used to decide trademark cases. It is also a problematic concept, one that hardly deserves emulation. Trademark cases tend instead to be decided either based on likelihood of confusion or on dilution grounds. Both trademark infringement and dilution incorporate significant limiting principles designed to balance the interests of society against the interests of policy owners, and to accommodate First Amendment concerns. These limits have not been incorporated into the right of publicity, however. The result is a mutant version of trademark policy, including the affirmative rights but virtually none of the defenses or limits of trademark law.

A proper understanding of the right of publicity would draw more completely on trademark principles, limiting the right to circumstances in which the use of an individual's name or likeness is either likely to confuse consumers or is likely to dilute the significance of a famous name. Revising the right of publicity to conform to the rules we have worked out in trademark cases will avoid some of the worst abuses of the right, limit the conflict between the right of publicity and First Amendment principles, and put the right on a more solid conceptual grounding.

In Part I, we describe the growth of the right of publicity from its narrow privacy origins to a virtually unlimited, descendible, assignable property right. Part I discusses two particular excesses that this trend has brought about, and that are increasingly creating problems for the courts and the public: the expanding merchandising right, and the dilution-like cause of action. Part II discusses the existing efforts to explain the growth of the right of publicity. Those explanations have generally focused on incentive-based rationales akin to copyright law - rationales whose logic breaks down in the right of publicity context. Part II goes on to explain why copyright proves inadequate to justify or to delimit the right of publicity, with particular reference to the merchandising and dilution-like cases. In Part III, we offer a new explanation for the right of publicity, one based in trademark principles. Part III shows how the right of publicity has adopted some but not all of the rules of trademark law, and how a more complete importation of trademark principles into publicity law would solve many of the problems that plague the doctrine. Finally, in Part IV we consider some objections and compare our approach to alternative approaches for dealing with the problems of the publicity right.